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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Monte dei Paschi di Siena S.p.A. v. Contact Privacy Inc., MyPrivacy.net Ltd. / Mario Zolia, zoliamario

Case No. D2021-2893

1. The Parties

The Complainant is Banca Monte dei Paschi di Siena S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.

The Respondent is Contact Privacy Inc., MyPrivacy.net Ltd., United States of America (“United States”) / Mario Zolia, zoliamario, Italy.

2. The Domain Name and Registrar

The disputed domain name <monte-paschi-di-siena.com> is registered with EasyDNS Technologies Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 8, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on October 8, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an Italian bank and is the owner, amongst others, of the following trademark registrations:

- Italian trademark registration No. 0000538309 for MONTE PASCHI (figurative mark), filed on June 14, 1990, registered on December 28, 1990 and duly renewed until the last renewal filed on June 8, 2020 with No. 362020000093802, in international class 36;

- Italian trademark registration No. 2018000037017 for MONTE PASCHI DI SIENA BANCA DAL 1472 (figurative mark), filed on November 21, 2018 and registered on June 6, 2019, in classes 9, 16, 35, 36 and 38;

- European Union trademark registration No. 007229834 for GRUPPO MONTEPASCHI (figurative mark), fled on September 12, 2008 and registered on March 23, 2009, in classes 35, 36 and 38;

- United States trademark registration No. 1947803 for MONTE PASCHI (figurative mark), filed on February 15, 1991 and registered on January 16, 1996, in international class 36.

The Complainant is also the owner of an extensive number of domain names, including <montedeipaschi.com>, registered on April 14, 1998, <montedeipaschidisiena.it>, registered on September 7, 2001, and <mps.it> registered on November 20, 1997, all of which are used by the Complainant to promote its services.

The disputed domain name was registered on May 20, 2021 and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name is confusingly similar to its company name, trademarks and domain names.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that it has never provided any third party with whatsoever authorization to register and/or use the disputed domain name or however domain names comprising the wording “montepaschi”, alone or in combination with the word “siena”, or other words similar thereto.

The Complainant also states that its searches among trademarks comprising the wording “montepaschi” in the name of third parties revealed no significant evidence about the existence of registered trademarks worldwide that may justify the registration and use of the disputed domain name.

The Complainant highlights that the disputed domain name does not resolve to a website from which any interest in its use by the Respondent may be inferred.

The Complainant further submits that the Respondent’s lack of rights or legitimate interests is confirmed by the fact that, prior to the filing of the Complaint, the Complainant contacted the Registrar to report the abusive registration of the disputed domain name by the Respondent and the Registrar promptly reacted by suspending the disputed domain name.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering the name Montepaschi is a “fanciful expression with no real meaning” and a term that has been used by the Complainant since 1472 to distinguish its activity and services, being the Complainant the oldest bank still operating at the international level and having reached a widespread media coverage, it is inconceivable that the Respondent registered the disputed domain name without prior knowledge of the Complainant and of its trademarks.

The Complainant also emphasizes that, by adding the word “siena” in the disputed domain name, the Respondent only further proved that its main aim was to target the Complainant, as Siena is the Italian city in which the Complainant’s bank was originally founded in 1472 and where still nowadays the Complainant has its registered office.

The Complainant asserts that the Respondent was undoubtedly targeting the Complainant knowing that the latter would have been interested in the ownership of the domain name and contends that the Respondent’s main purpose upon registering the disputed domain name was of selling, renting or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, or of disrupting the Complainant’s business and reputation.

The Complainant also underlines that the disputed domain name was never used in any lawful manner since its registration and submits that the lack of use of a domain name which is not backed up by any trademark rights coinciding with a well-known or renowned trademark owned by someone else, is a clear indication of bad faith registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of several trademark registrations consisting of MONTEPASCHI (in stylized characters) alone or in combination with other words and/or design elements, including an Italian trademark registration for MONTE PASCHI DI SIENA BANCA DAL 1472 (figurative mark).

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s earlier trademarks since it entirely reproduces the Complainant’s trademark MONTEPASCHI, along with the geographical term “siena”, which is also part of the Italian figurative trademark MONTE DEI PASCHI DI SIENA DAL 1472, mentioned above.

The addition of the geographical term “siena”, of hyphens and the Italian simple preposition “di” (“of”) does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.

Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Moreover, there is no element from which the Panel could infer the Respondent’s right over the disputed domain name, or that the Respondent, whose name according to the Registrar’s WhoIs records for the disputed domain name is Mario Zolia, might be commonly known by the disputed domain name.

In addition, based on the records, the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services, nor has made any preparations for such use. The Panel also finds that passive holding of a domain name does not in itself constitute legitimate noncommercial or fair use. Furthermore, considering the composition of the disputed domain name, the Panel finds that it carries a high risk of implied affiliation.

See section 2.5.1 of the WIPO Overview 3.0: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

In the case at hand, the Panel finds that, in light of the reputation of the Complainant and its trademarks in the banking and financial sector in Italy, where the Respondent is based, and in view of the composition of the disputed domain name, combining the trademark MONTEPASCHI with the word “Siena”, which is the place of origin of the Complainant since its creation in 1472, and it is still the location of its registered office, the Respondent was clearly aware of the Complainant and its trademarks at the time of registration.

The Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its very selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.

As to the use of the disputed domain name, it has not been pointed prima facie to an active website according to the records. As indicated in section 3.3 of the WIPO Overview 3.0, “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put”.

In the case at hand, in view of i) the distinctiveness and reputation of the Complainant’s prior trademarks; ii) the Respondent’s registration of a domain name clearly confusingly similar to the Complainant’s prior trademarks; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iv) the Respondent’s failure to respond to the Complaint; and iv) the implausibility of any good faith use to which the disputed domain name may be put, considering that it corresponds to the name of a bank, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <monte-paschi-di-siena.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: October 22, 2021

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